WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sony Kabushiki Kaisha aka Sony Corporation v. A. Smith
Case No. D2006-0652
1. The Parties
The Complainant is Sony Kabushiki Kaisha aka Sony Corporation, Tokyo, Japan, represented by Abelman Frayne & Schwab, United States of America.
The Respondent is A. Smith, Hong Kong, SAR of China.
2. The Domain Name and Registrar
The disputed domain name is registered with Domain-A-Go-Go, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2006. On May 26, 2006, the Center transmitted by email to Domain-A-Go-Go, LLC a request for registrar verification in connection with the domain name at issue. On May 31, 2006, Domain-A-Go-Go, LLC transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 13, 2006. The Center verified that the Complaint and the Amendment thereto satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 15, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 10, 2006.
The Center appointed Adam Samuel as the sole panelist in this matter on August�11,�2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Sony Corporation owns over 400 trademark registrations for the mark SONY or marks containing SONY in Japan, where Sony Corporation is headquartered, over 50 registrations and applications for the mark SONY or marks containing SONY in the United States, where the Registrar for the domain name of the Respondent is located, and over 90 registrations for the mark SONY or marks containing SONY in Hong Kong, where the Respondent purports to be located.
5. Parties’ Contentions
A. Complainant
The domain name is identical or confusingly similar to the trademark, SONY. The first and dominant element of the domain name incorporates the trademark SONY. The trademark is distinctive and widely recognized in association with the Complainant and the Complainant’s business activities.
The relevant portion of the domain name combines the trademark with the ordinary English word “outlet”. When a famous and invented mark is combined with a common noun or adjective, that combination constitutes a domain name which is confusingly similar to an invented and world-famous mark.
The Respondent has not been licensed, contracted or otherwise permitted by the Complainant in any way to use its trademark or to apply for any domain name incorporating the trademark, nor has the Complainant acquiesced in any way to such use or application of the trademark by the Respondent. Indeed, at no time did the Respondent have authorization from the Complainant to register the domain name in issue. To the best knowledge of the Complainant, the Respondent has no legitimate right or interest in the disputed domain name.
The trademark is so well-known that the Respondent must have had notice of it when it registered the domain name. In the Japanese and English languages, the word “Sony” is a coined or invented word and does not have any meaning other than as a reference to the Complainant and the Complainant’s products.
The Respondent does not use the domain name in connection with a bona fide offering of goods or services. The domain name currently is associated with a web portal page with pay-per-click links. The use of a domain name that incorporates a well-known trademark to direct visitors to an unconnected website cannot constitute use in connection with a bona fide offering or goods or services or otherwise be considered a legitimate interest in a domain name.
Because of the famous and distinctive nature of the SONY trademark, the Respondent, who purportedly is located in Hong Kong, is likely to have had constructive notice as to the existence of the Complainant’s trademarks at the time the Respondent registered the domain name. Such constructive notice suggests the Respondent acted with opportunistic bad faith in registering the domain name.
The Respondent uses the Domain Name to divert Internet traffic to his web portal directory and Pay-Per-Click search engine, and has thus attempted to attract, for commercial gain, Internet users to his website. The Complainant contends that in registering and using the domain name in issue, the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s web site.
The Respondent’s provision of false contact information in the domain name registration of is evidence of bad faith. An e-mail sent by the Complainant to the Respondent was returned “undeliverable”. As stated in numerous prior decisions, the Respondent’s provision of false contact information is strong evidence that the Respondent registered the Domain Name in bad faith. In addition, the Respondent’s maintenance of such false information after registration constitutes bad faith use of the Domain Name because it prevents the Complainant from identifying the Registrant and investigating the legitimacy of the registration, particularly as to whether the Registrant has “registered the domain name primarily for the purpose of disrupting the business of a competitor” and whether the Registrant has engaged in a pattern of registering domain names “in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name”. The failure to provide compete contact information is also evidence of bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The addition of generic words after a trademark does not remove the confusing similarity between a mark and the domain name. So, the addition of the word “outlet” to the Complainant’s trademark has no effect in this respect. The Complainant has registered trademark rights to the name SONY. The Panel finds that the domain name in issue is confusingly similar to that trade mark.
B. Rights or Legitimate Interests
The Respondent is not called “Sony” or anything similar and does not appear to trade under that name. There is no evidence that the owner of the trademark in question, the Complainant, has authorized the Respondent to use the trademark. The Respondent has never asserted any rights or legitimate interests in the name. For these reasons, on the basis of the evidence in case file, and in view of the absence of a Response, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
The Complainant and its trademark are so well-known that one must assume that the Respondent knew of their existence when registering this domain name. The word “Sony” has no independent existence in English or Japanese. One has to infer that the Respondent registered the domain name in issue in an attempt to use the Complainant’s trademark either to disrupt the Complainant’s business or to divert business to itself.
The domain name resolves to website containing hypertext links offering services in relation to the Complainant’s products and other competing businesses. The apparent objective is to earn revenue on a pay-per-click-through basis.
Registration and use made “for the purpose of disrupting the business of a competitor”; or “to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location” constitutes evidence and use in bad faith under paragraph 4(b)(iii) and (iv) of the Policy.
For these reasons, the Panel concludes that the Respondent registered and has used the domain name in issue in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.
Adam Samuel
Sole Panelist
Dated: August 21, 2006
Full & Egal Universal Law Academy